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`Trials@uspto.gov
`571-272-782 Entered: October 11, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`MERRILL COMMUNICATIONS LLC d/b/a MERRILL CORPORATION,
`Petitioner,
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`v.
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`E-NUMERATE SOLUTIONS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01389
`Patent 9,268,748 B2
`____________
`
`
`Before KEN B. BARRETT, JONI Y. CHANG, and
`ALEX S. YAP, Administrative Patent Judges.
`
`
`YAP, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motion for
`Pro Hac Vice Admission of Adam R. Steinert
`37 C.F.R. § 42.10
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`IPR2018-01389
`Patent 9,268,748 B2
`
`
`Merrill Communications LLC d/b/a Merrill Corporation (“Petitioner”)
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`filed a Motion for Pro Hac Vice Admission of Adam R. Steinert (“Motion”).
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`Paper 6.1 Petitioner provided a Declaration of Mr. Steinert in support of its
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`Motion.2 Patent Owner did not file an opposition.
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`Having reviewed the Motion and the Declaration of Mr. Steinert, we
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`conclude that Mr. Steinert has sufficient qualifications to represent Petitioner
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`in this proceeding and that Petitioner has shown good cause for
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`Mr. Steinert’s pro hac vice admission. See Unified Patents, Inc. v. Parallel
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`Iron, LLC, IPR2013-00639, Order Authorizing Motion for Pro Hac Vice
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`Admission, Paper 7 (PTAB October 15, 2013) (setting forth requirements
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`for pro hac vice admission). Mr. Steinert is permitted to appear pro hac vice
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`in this proceeding as back-up counsel only. See 37 C.F.R. § 42.10(c).
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`1 For future filings, the Parties shall conform the caption pages of their
`filings to that of this Order.
`2 For future filings, evidence in support of any motions or briefs must be
`filed as an exhibit rather than appended to the end of the motions or briefs.
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`2
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`IPR2018-01389
`Patent 9,268,748 B2
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`
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`It is
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`ORDER
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`ORDERED that Petitioner’s Motion for Pro Hac Vice Admission of
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`Adam R. Steinert is granted, and Mr. Steinert is authorized to represent
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`Petitioner only as back-up counsel in this proceeding;
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`FURTHER ORDERED that Petitioner must file a power of attorney
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`within 3 business days designating Mr. Steinert in accordance with
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`37 C.F.R. § 42.10(b), if he is not already included in a previously filed
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`power of attorney;
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`FURTHER ORDERED that Petitioner must file an updated
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`mandatory notice identifying Mr. Steinert as back-up counsel in accordance
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`with 37 C.F.R. § 42.8(b)(3) ), if he is not already identified as back-up
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`counsel in a previous filing;
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`FURTHER ORDERED that Petitioner is to continue to have a
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`registered practitioner as lead counsel in this proceeding;
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`FURTHER ORDERED that Mr. Steinert is to comply with the Office
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`Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as
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`set forth in Title 37, Part 42 of the Code of Federal Regulations; and
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`FURTHER ORDERED that Mr. Steinert is subject to the USPTO’s
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`disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and the USPTO’s Rules
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`of Professional Conduct set forth at 37 C.F.R. §§ 11.101 et seq.
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`3
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`IPR2018-01389
`Patent 9,268,748 B2
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`FOR PETITIONER:
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`Katherine Rahlin
`krahlin@fredlaw.com
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`FOR PATENT OWNER:
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`Gregory Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`George Gordon
`andrew@agordonlawfirm.com
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`4
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